United Arab Emirates

Legislation

Intellectual property legislation includes Patents and Industrial Design Law No.44 of 1992, Trademarks law No.37 as of 1992, Copyright and Neighboring Rights Law No. 40 of 1992. The Industrial Property Office administers Patents and Designs under the supervision of the Industrial Property Directorate, Ministry of Finance and Industry. The Trademark Section administers Trademarks under the supervision of the Ministry of Economy and Commerce. However, Copyright is administered by the Copyright Department under the supervision of the Ministry of Information and Culture. United Arab Emirates is member of WIPO Convention since September 24, 982 and is signatory to the Paris Convention as of September 19, 1996, and the Berne Convention (Literary and Artistic Works) as of July14, 2004, and the Rome Convention as of January 14, 2005 and is member and signatory to TRIPS Agreement since April 1996. UAE is member of the Gulf Cooperation Council as of November, 1998.

United Arab Emirates Patents Registration.

When an application is filed, the Industrial Property Office will examine the patent application to ensure compliance as regards formal requirements. Once compliance with formal requirements has been satisfied, the application shall be given a filing number and a filing date. If formal requirements called for under the Implementing Regulations are not satisfied, the applicant will be notified to complete formal requirements within a period not exceeding 90 days from the date of notification. Again, an examiner may require amendments to the specification, the claims or the drawings if such an amendment does not touch on the substance of the invention as filed. Nonetheless, if any matter is to be incorporated, it must be subject to a patent of addition.

Patents are valid for 20 years as from the date of filing. A utility certificate is valid for a period of ten years and is renewable for a period not exceeding five years. Annuities can be paid on or before the due date, however a grace period of 6 months is permitted, subject to payment of a fine which may be absolved, if late payment is made within the first three months of the grace period. The patentee must exploit the patent within a period of 4 years as from the filing date or 3 years as from the date of grant. As regards a utility model the four year period is reduced to three years and the three years period is reduced to two years. Accordingly, if a patentee failed to exploit the invention within the prescribed period or abandoned the work for two consecutive years, an interested third party may put his oar in and request cancellation of the patent or grant of a compulsory license. The Industrial Office may, in an appropriate case, grant a compulsory license to any interested person in a position to put the patent into operation. An assignment of a patent requires to be recorded in the Official Gazette within a period of 6 months subject to presentation of a duly executed and legalized deed of assignment. The letters patent as and when granted shall be published in the Official Gazette; and at this juncture any interested party, may within a period of 60 days as from the date of publication, file an opposition. The Appeal Committee of the Industrial Property Administration, a semi-judicial Committee, will preside over the raised opposition matter. The decision of the said Committee will be appealed to the competent First Instance Civil Court whose decision will be appealed to the Appeal Court.

Formal filing requirements are as follows:

A power of attorney duly legalized by a UAE Consulate.

Full particulars of the applicant.

A duly authenticated and legalized deed of assignment, if the applicant is not the owner.

A duly certified copy of the certificate of incorporation or an extract from the Commercial Register if the applicant is a legal entity.

Two copies of the specification in English with an Arabic translation. (Required at the date of filing.) The specification must be in conformity with the following sequence:

Title of the invention.

Field of the invention.

Prior art or background of the invention.

Disclosure of the invention.

Brief description of the drawings.

Full description of the invention detailing the method to execute the invention, its industrial application and if appropriate with examples, statistics etc,

Claims. (Required at the date of filing.)

Two sets of the formal drawings. (Required at the date of filing.)

An abstract of the invention which shall not exceed 200 words. (Required at the date of filing.)

Indication of international classification of the invention if known.

Priority document showing the filing date, number, and country if priority is to be claimed. It is also required to submit publication number and date in case the invention has been published in the home country or a foreign country. In the event the invention has been granted in any country, the number and date of letters patent is required.

For a Patent Cooperation Treaty (PCT) national phase application the following additional documents are required.

Copy of PCT International Advertisement. Required at the date of filing.

Copy of the International Search Report. May be submitted later.

Copy of the International Preliminary Examination Report. May be submitted later.

Copy of any changes, if any, made during the international phase process at WIPO.

Note: United Arab Emirates is a member of the GCC Patent Cooperation Treaty (PCT) as of October 26, 2001. A grant of a patent by the GCC Patent Office secures legal protection with all the GCC member states without the need to pursue any further processing action in any member state, except infringement matters which shall be governed by the domestic laws of each member state.

Please click on GCC Patent Office to see filing requirements.

Designs.

Once an application is filed it will be examined as to form to ensure that formal requirement has been met. In the event the Industrial Property Office declines to accept the design or model, the applicant may appeal the decision to the Appeal Committee of the Industrial Property Administration, a semi-judicial Committee, whose decision may be appealed to the competent First Instance Civil Court whose decision will be appealed to the Appeal Court.

In the event a design is accepted, it will be published and recorded in the Official Gazette. Any interested party may contest publication within a period not exceeding 60 days from the date of publication. An industrial design or a model is valid for five years as from the date of filing and is renewable for a period not exceeding two years. Annuity fees must be paid within the last month of each year; however a grace period of 30 days is permitted subject to payment of a fine. An assignment should be recorded within a period of six months. The proprietor of the industrial design has an unfettered legal right to institute legal proceedings as and when an infringement has been committed affecting his rights in the design. The same procedure as applied to patents shall apply to industrial designs.

Formal filing requirements are as follows:

A power of attorney duly legalized by a UAE Consulate. May be submitted later

Full particulars of the applicant. May be submitted later.

A duly authenticated and legalized deed of assignment, if the applicant is not the owner.

A duly certified copy of the certificate of incorporation or an extract from the Commercial Register if the applicant is a legal entity. May be submitted later.

A duly certified priority document if priority is to be claimed. May be submitted later.

Two copies of the model or design having two dimensions. In the event the model or design is a three dimensional one, two copies of each view is required. (This is required at the date of filing.)

Trademarks/service marks.

The Nice International Classification of Goods and Services is adopted subject to particular limitations such as trademarks concerning alcoholic goods and pork meat. Again, registration of a mark shall be declined if the trademark offends or is contrary to public morality. The revision of class 42 and the creation of class 43 to 45 have been adopted since January 1, 2002. A grace period of 30 days is allowed to rectify irregularities or to comply with required amendments. In the event, the Industrial Property Office declines to accept registration of a mark, the applicant is entitled within a period not exceeding 30 days from the date of official notification to raise a complaint before the Appeal Committee of the Industrial Property Administration whose decision may be appealed within 30 days to the First Instance Civil Court whose decision may be appealed to the competent Appeal Court.

United Arab Emirates Industrial Property Office will examine the application to ensure formal compliance. Once formal compliance is secured, the application will be published in the Official Gazette and one local newspaper, and hence the Certificate of Registration will be issued. An opposition may be raised by any interested party within a period of 30 days from the date of filing. The time required to consummate processing till the stage of receiving the Certificate of Registration is in the range of 8 to 10 months. The term of validity for a duly registered trademark is 10 years, renewable for further periods of 10 years each, subject to payment of the prescribed fee. A grace period of 3 months is allowed. A trademark may be assigned with or without goodwill; however an assignment must be recorded as provided for under the law. A trademark may be cancelled by order of the competent court, if an interested third party established cogent grounds showing non-use for a period of five consecutive years as from the date of filing. Infringements proceedings are heard by the First Instance Court. Forged or counterfeited goods, on the basis of a court order, shall be confiscated and destroyed by the concerned department at the Ministry of Economy and Commerce. The court’s order may involve suspension of the infringement act, in addition to payment of losses and damages.

Formal filing requirements are as follows:

Name and address of the applicant including his nationality, his domicile and the address of his place of business.

A power of attorney duly legalized by a United Arab Emirates Consulate.

A copy of the certificate of incorporation or an extract from the Commercial Register dully certified and legalized by a United Arab Emirates Consulate.

18 self- adhesive prints of a trademark/service mark for each class. A trademark print must be in the range of (size 6x6cm)

A complete list of goods and services to be covered by the registration.

A certified copy of the priority document if priority is to be claimed. May be submitted within three months from the date of filing.

NOTE: As regards countries members of the Paris Convention, priority could be claimed within 12 months from the earliest corresponding application. Documents in a foreign language other than in English should be accompanied with their English translation. As regards Collective Marks applications, prints of all mark must be included in one sheet. In connection with Quality Control Marks applications, the body seeking registration of the Marks shall submit two duly certified copies of the Institution or the Association’s bylaws including all amendments. Again, such a body shall submit two duly certified copies of the system adopted by the said institution or association which indicates the method or manner utilized to control or inspect products. It is also pertinent to indicate meaning of the mark, if any and its origin, list of the persons envisaged to use the mark, list of the good and services embraced by the mark. Again, the said body must show the terms and conditions which must be observed for using the Marks.

Changes.

Alteration of goods and services.

Alteration of a registered trademark.

Voluntary cancellation of a registration.

Change of name and / or address of the owner.

Assignment of the registration.

Licensing contract.

Requirements:

A power of attorney duly executed and legalized by a United Arab Emirates Consulate.

A duly certified instrument of change of name and/or address.

Original certificate of registration / renewal as the case may be.

A deed of assignment duly executed and legalized by a United Arab Emirates Consulate.

A duly executed licensing contract.

Copyright.

Range and extent of protection.

The UAE Copyright is implemented since August 30, 1994. The copyright law provides protection for original intellectual works of art in literature, science, arts and culture in general. The law provides protection irrespective of the value, type, manner of expression or purpose of the work. Protection under the copyright law ends 25 years after the death of the author. However, if the copyrighted substance is owned by a legal entity rather than a natural person, the 25 years protection shall begin on the date the material was first published. The validity term for photographic work is only ten years.

The author may assign the rights granted to him subject to prescribed terms and conditions. Infringements are presided over by the First Instance Civil Court. In connection with copyright and related matters, the Supervisory Ministry is the Ministry of Information and Culture. Registration with the Ministry of Information and Culture is voluntary; however registration shall be considered as a reliable reference to copyright information. The work for which protection is sought must obtain prior approval of the Censorship Department. Accordingly, any printed material or computer programs can not be distributed in United Arab Emirates, unless prior approval of the Ministry of Information and Culture has been obtained. This necessitates securing a duly appointed distributor to undertake the task of obtaining the requisite authorization.

Formal filing requirements are as follows:

Name and address of the applicant including his nationality, his domicile and the address of his place of business. In the event the work is authored jointly, the authors’ names for the joint work must be indicated.

A power of attorney simply signed.

A duly executed and legalized deed of assignment, if the author is not the applicant.

A statement furnishing ample description of the work.

10 copies of the work for which protection is sought to be lodged with the Ministry of Information and Culture.

A certificate from the Censorship Department at the Ministry of Information and Culture.

A declaration from the author or authors specifying the manner they have preferred to publish the work for which protection is sought

A written declaration by the author; and if he had died his heirs, verifying ownership of the work for which protection is sought.

A certificate of agency or distributorship as issued by the Commercial Register at the Ministry of Economy and Commerce, in the event a local agent or distributor has been appointed by a foreign owner.